WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Archipelago Holdings LLC, v. Creative Genius Domain Sales and Robert Aragon d/b/a/ Creative Genius Domain Name Sales
Case No. D2001-0729
1. The Parties
Complainant is Archipelago Holdings, LLC ("Archipelago"), a Delaware corporation, with headquarters in Chicago, Illinois, USA. Complainant is represented by Baker & McKenzie.
Respondents are Creative Genius Domain Sales of Albuquerque, New Mexico, USA, a doing business name for Robert A. Aragon, and Robert Aragon d/b/a Creative Genius Domain Names Sales of Albuquerque, New Mexico, USA (together, "Aragon" or "Respondent"). Respondent proceeds pro se.
2. Domain Names and Registrar
The domain names at issue are:
For ease of reference, at various points throughout this Decision, identification of each of these domain names is made by way of the number associated with it in the above list; all the domain names together are referred to collectively as the "ARCA Domain Names."
The Registrar of the domain names (1) through (7) is Register.com. The Registrar of the domain names (8) through (14) is Network Solutions, Inc. ("Network Solutions").
3. Procedural History
The WIPO Arbitration and Mediation Center (the "Center") received Archipelagoís complaint (the "Complaint") by email on June 1, 2001 and in hard copy on June 5, 2001.
On June 7, 2001, the Center transmitted via email to Register.com a request for registrar verification of domain names (1) through (7). On June 7, 2001, Register.com transmitted via email to the Center confirmation that those domain names were in fact registered to Aragon, d/b/a Creative Genius Domain Sales. Likewise, on June 7, 2001, the Center transmitted via email to Network Solutions a request for registrar verification of domain names (8) through (14). On June 8, 2001, Network Solutions transmitted NSIís Verification Response via email to the Center, confirming that those domain names were in fact registered to Creative Genius Domain Name Sales. Aragon was listed as the Administrative and Billing Contact for domain names (8) through (14).
The Center subsequently reviewed the Complaint to verify that it satisfied the formal requirements of the ICANN Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules"). On June 11, 2001, the Center transmitted via email to Complainant a request for amendment to the Complaint. The original Complaint had specified Internet Communications as the registrar of domain names (8) through (14). In fact, as noted above, Network Solutions is the Registrar of these domain names. On June 14, 2001, Archipelago amended the Complaint to reflect the correct Registrar.
On June 21, 2001, the Center formally commenced this administrative proceeding by transmitting to Respondent a Notification of Complaint and Commencement of the Administrative Proceeding, together with a copy of the Complaint and the amendment to the Complaint, via courier and email. The Center advised Respondent that the Response was due on July 10, 2001 and described the consequences of a default if a Response was not sent by that date.
Respondent, who received a copy of the Complaint from Complainant on June 7, 2001, sent numerous email communications to the Center on June 11, 2001. These communications consisted of a short statement by Respondent claiming his legitimate interest in the domain names and articles from various financial publications discussing Complainantís plans to seek approval from the United States Securities and Exchange Commission ("SEC") to become a self-regulating stock exchange, the withdrawal of that filing, and Complainantís subsequent plan to ally itself with the Pacific Stock Exchange ("PCX"). Notwithstanding its actual notice of the Complaint, though, Respondent failed to provide a Response as required under the Rules by the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding. On July 11, 2001, the Center notified Respondent via email that he was in default. The Center told Respondent that the emails he sent to the Center dated June 11, 2001, although not a formal response, would be forwarded to the Panel for its consideration.
On July 27, 2001, after clearing for potential conflicts, the Center appointed David H. Bernstein as the Sole Panelist and informed the parties that the expected date of decision was August 10, 2001.
On August 2, 2001, Respondent sent an email directly to the Panel, attaching the text of a November 9, 2000 article from the Securities Industry News regarding Complainantís plans to set up the first automated certification tool in the industry. In response, on August 3, 2001, the Panel issued the following order:
"The Panel has received an email from the Respondent. Pursuant to the Rules, all submissions must be sent to the Center, with a copy to the Complainant. Submissions may not be sent directly to the Panel. In addition, the Rules do not provide for supplemental submissions by a Party, except in limited circumstances. See Pacific Fence & Wire Co. v. Pacific Fence, WIPO Case No. D2001-0237 (June 11, 2001). Further violation of the Rules will result in the Panel's disregard of the submitted materials and, potentially, other relief as well. See Britannia Building Society v. Britannia Fraud Preventions, WIPO Case No. D2001-0505 (July 6, 2001)."
On August 10, 2001, after completing its review of the record, the Panel requested additional submissions by the Complainant, including (i) copies of the trademark file wrappers in connection with Complainantís applications to register, with the United States Patent and Trademark Office ("PTO"), the mark "Archipelago," Serial Nos. 76/034513 and 76/035025, and the mark "ARCA," Serial No. 75/896994, and (ii) an explanation of the significance of references in the Complaint to the domain names <arcatrading.com> and <arcatrader.com>, domain names not included in the list of domain names of which Complainant was seeking transfer. The request for supplemental submissions required the Complainant to provide any materials by August 17, 2001, and provided Respondent with the opportunity to respond to the supplemental submissions by August 27, 2001. The Panel adjusted the date of decision to September 7, 2001.
Complainant provided its supplemental submissions on August 16, 2001. In its supplemental submissions, Complainant sought leave to amend its Complaint to seek transfer of the domain names <arcatrading.com> and <arcatrader.com>, also registered by Respondent. Complainant claimed that the domain names were inadvertently omitted from the Complaint. In response, on August 20, 2001 the Panel issued the following Order:
"The Complainant filed its initial Complaint on June 7, 2001 Ė more than two months ago. On June 14, 2001, in response to a deficiency notice from the World Intellectual Property Organization Arbitration and Mediation Center (the "Center"), the Complainant amended its Complaint. The Center formally commenced this proceeding on June 21, 2001 and, after Respondent defaulted, appointed this Panel on July 27, 2001. After its review of the case file, the Panel, on August 2, 2001, requested further submissions from the parties. Now, after all of these proceedings, the Complainant seeks leave to add two new domain names <arcatrading.com> and <arcatrader.com> on the ground that these "domain names were inadvertently omitted from the Complaint."
If the Panel were to grant Complainantís request, it would cause substantial delay in the final resolution of this dispute. The Center would have to submit new Registrar Verifications, and the Respondent would have to be given 20 days to respond to Complainantís claims that these domain names are identical or confusingly similar to its trademarks, that Respondent has no legitimate interest in these domain names, and that Respondent registered and used them in bad faith. Had this request been made shortly after the filing of the initial complaint, then the amendment likely would have been acceptable, as it would have caused neither prejudice nor delay. That, in fact, was the circumstance in Maruti Udyog Ltd. v. Subba Raju, WIPO Case No. D2000-1036 (Jan. 30, 2001), and Louis Vuitton Malletier v. Somsak Sooksripanich, WIPO Case No. D2000-0866 (Nov. 3, 2000), the two cases on which Complainant relies in its motion. The request might also have been acceptable if it were made shortly after the domain names were registered, especially if they were registered after the filing of the initial Complaint.
But none of that is the case here. Complainant knew of these domain names at the time of the Complaint Ė in fact, they are expressly discussed in the Complaint. Moreover, although the Panel is sympathetic to the Complainantís inadvertent omission, given the current procedural posture of this case, the Panel concludes that it is too late to amend the Complaint. The judicial economy that would result from allowing the amendment and thus avoiding the need for Complainant to file a second challenge against this Respondent is outweighed by the delay that the amendment would engender. Diageo p.l.c. v. Zuccarini, WIPO Case No. D2000-0541 (Aug. 22, 2000) (denying request to amend Complaint to add 11 new domain names as being untimely because request filed after the Respondent had already filed its Response).
Accordingly, the Panel denies Complainantís motion. This decision is without prejudice to Complainantís filing a new Complaint with respect to these two domain names."
Respondent submitted two emails on August 26 and 27, 2001. Rather than address the specific issues raised by the Panelís Request for Supplemental Submissions, Respondentís emails constituted a repetition of its full defense, including discussion of Complainantís business plans as an Electronic Communications Network and the potential fair uses of the word "Archipelago."
On August 29, 2001, Complainant requested that Respondentís supplemental submission be stricken as non-responsive to the Panelís Order dated August 10, 2001. On August 30, 2001, Respondent in turn requested that Complainantís August 29, 2001 email be stricken from the record as non-responsive. Respondent also included in its August 30, 2001 submission further argument in response to the Complaint.
The Panel grants Complainantís request and denies Respondentís request. The Panelís Order clearly instructed the parties to file supplemental submissions only on two narrow issues. To the extent Respondentís submissions went beyond those issues, the Panel has disregarded them. The Panel also disregards the arguments in Respondentís untimely August 30, 2001 email and his subsequent email dated August 31, 2001, which was entitled "Not a Submission Ė Point of Interest Only."
4. Factual Background
Complainant is an Electronic Communications Network ("ECN") approved by the SEC since 1997 for direct interaction with the NASDAQ National Market System. ECNs allow market participants to execute trades anonymously and eliminate the need for an intermediary, such as a dealer or broker.
Complainant is a major player in the equities trading market, and its clients include institutions and broker-dealers. One of Complainantís most valuable consumer services is a service known as the ARCA Integrated Book, which allows investors to view offers and bids submitted to several ECNs simultaneously.
Complainant has an exclusive right to open architecture software with "smart order routing," which allows routing of a customerís order to the best price in the market, regardless of whether the best price is offered by another Archipelago customer or from a customer using a different system. Complainant is currently the only ECN offering "smart order routing."
Complainant has used the ARCHIPELAGO and ARCA marks for four years in connection with its current business. According to the public records of the PTO, Complainant currently holds three pending United States trademark applications: one for the mark ARCHIPELAGO (filed April 25, 2000), a second for ARCA (filed January 14, 2000) and a third for TRADEARCA.COM (filed January 14, 2000). These trademarks applications indicate that the marks are for use in connection with "order, entry, and execution services in the field of securities," "electronic transmission of data pertaining to trading equities, futures, options and other financial instruments," as well as "broker-dealer services" and "research services for others in the fields of securities, bonds, and other financial instruments." According to the PTOís TESS search engine, which publishes the status of trademark applications, and the versions of the PTO file wrappers submitted by Complainant on August 20, 2001 only one of Complainantís applications has been approved Ė the application for registration of the mark TRADEARCA.COM was published for opposition on July 31, 2001. The application for ARCA is still pending. As for Complainantís application for registration of the ARCHIPELAGO mark, although that application was the subject of a final refusal issued by the PTO on March 22, 2001, Complainant has sought to comply with the PTOís requirements and has filed a response to this final refusal. In addition, Complainant is the owner of various domain names incorporating the ARCHIPELAGO and ARCA trademarks, including <tradearca.com> (registered on April 14, 1998) and <archipelagoservices.com> (registered on June 5, 1998).
Respondent is the owner of the ARCA Domain Names. At the time of this opinion, none of the websites found at the ARCA Domain Names contain content or services of any kind; instead each domain name resolves to a "splash screen" provided by the domain namesí respective Registrars.
5. Partiesí Contentions
Complainant alleges that the ARCA Domain Names owned by Respondent are confusingly similar to the ARCHIPELAGO, ARCA, and TRADEARCA.COM marks. Complainant claims that it is well known in the U.S. financial sector as both ARCHIPELAGO and ARCA, the latter of which is used to refer to Complainantís entire trading system. Complainant also claims that the ARCA designation is particularly significant because it is part of Complainantís most valuable consumer service, the ARCA Integrated Book. Complainant asserts that the ARCA Integrated Book is available at www.tradearca.com. Furthermore, all of Complainantís employeesí email addresses end in @tradearca.com. Complainant claims that ten of the fourteen ARCA Domain Names registered to Respondent (ARCA Domain Names (5) through (14)) include Complainantís ARCA mark, and the remaining four ARCA Domain Names ((1) through (4)) include the ARCHIPELAGO mark. Complainant further claims that all fourteen ARCA Domain Names registered by Respondent reference stocks, trading, exchanges, or ECNs in an attempt to connect these domain names with Complainant.
Complainant also alleges that Respondent has no rights or legitimate interest in or to the ARCA Domain Names. Complainant claims it has not granted Respondent any rights to use the ARCHIPELAGO or ARCA marks, and Respondent is not in any way related to, or associated or in business with, Archipelago.
Complainant further alleges that Respondent registered the ARCA Domain Names in bad faith. Complainant claims the timing of Respondentís registration of the ARCA Domain Names evidences Respondentís bad faith intent to confuse Internet users into believing there is some association between Respondent and Complainant:
On July 27, 1999, Complainant publicly announced plans to seek SEC approval to become a registered, national, independent, self-regulating stock exchange.
On August 9, 1999, Complainant filed its application with the SEC.
On August 17, 1999, Respondent registered domain names (2) through (4).
On August 30, 1999, Respondent registered domain name (1).
On September 18, 1999, Respondent registered domain names (5) through (7).
In early March 2000, Complainant modified its previously announced business plans and instead became the first ECN to form an alliance with a traditional stock exchange, the PCX. The new entity is to be known as the Archipelago Exchange, and it will provide automatic order execution capabilities in the equity securities listed or traded on the PCX in place of PCXís traditional floor trading facilities. This announcement generated much unsolicited publicity.
On March 7, 2000, Respondent registered domain names (8) through (12) and (14).
On March 8, 2000, Respondent registered domain name (13).
Complainant claims that the contemporaneousness of Complainantís announcements regarding its business plans and Respondentís registration of the ARCA Domain Names evidences Respondentís bad faith.
Complainant further claims Respondent has engaged in a pattern of conduct of registering domain names incorporating third party trade names and marks. For example, Credit Suisse First Boston owns a federal trademark registration for ISLAND ECN for use in connection with its stock brokerage business. Complainant alleges that Respondent has registered, inter alia, the following domain names incorporating Credit Suisse First Bostonís trademark: <islandstocks.com>, <islandstocktrade.com>, and <islandstocktrader.com>. Another example of Respondentís alleged pattern of conduct is Respondentís registration of various domain names relating to Oscar De La Hoya, a popular boxer and Mr. De La Hoyaís company, Golden Boy Enterprises, LLC, which owns trademark and service mark registrations and applications for OSCAR DE LA HOYA FAN CLUB, OSCARDELAHOYA.COM, and GOLDEN BOY. On February 25, 2000, Respondent registered, inter alia, <goldenboyboxing.com>, <oscarboxing.com>, and <oscardelahoyafanclub.com>. Complainant asserts that Aragon d/b/a Creative Genius Domain Name Sales has registered 1,381 domain names, none of which is currently linked to an active website. Complainant contends that this demonstrates Respondentís practice of regularly and habitually warehousing domain names.
Complainant alleges that Respondent intends to profit from the goodwill associated with the ARCHIPELAGO and ARCA marks because he has offered the ARCA Domain Names for sale through an auction, which further evidences his bad faith. Complainant claims Respondent made domain names (1) and (2) available for purchase on a domain name auction website, <afternic.com>. Both of these names were placed in the "Business" and "Investment" categories by afternic.comís system . Complainant also asserts that Respondent listed domain names (2), (3), and (8) through (14) on the domain name auction site, greatdomains.com. Complainant emphasizes the value of these domain names by pointing to the opening bid for domain name (1) on November 14, 1999, which was set at $62,500. Likewise, Complainant asserts that anonymous commentators on afternic.comís website valued domain name (1) at $10,000 and $50,000. Complainant claims that as recently as March 5, 2001, domain name (2) was listed for sale on afternic.com.
Complainant alleges that, shortly after it became aware that Respondent had registered domain name (1) in late 1999, Complainant contacted Respondent via first class mail and email advising him of his violation of Complainantís trademark rights. Complainant requested that Respondent transfer domain name (1) to Complainant and offered to reimburse him for the costs associated with obtaining domain name (1). Respondent did not reply to Complainantís request until nearly a year later, on November 3, 2000. Complainant alleges that, in his November 3, 2000 email, Respondent claimed he owned domain name (1) because of his purported "retail exchange" in the Archipelago Islands. Complainant claims that Respondent offered to transfer the domain name in exchange for stock in Complainantís company, Archipelago, which would be worth markedly more than the $70 registration fee Complainant had originally offered. Complainant refused to exchange domain name (1) for stock rights in Archipelago and attempted to contact Respondent both through email and post, numerous times in January and February 2001. Respondent replied to correspondence from Complainantís counsel on January 26, 2001 stating he needed 7 to 10 business days to respond, but Complainant claims it has not had any communication with him since that date.
As discussed in Section 3 above, Respondent failed to comply with the deadline indicated in the Notification of Complaint and Commencement of Administrative Proceeding for the submission of his Response. Thereafter, the Center notified Respondent that his June 11, 2001 emails would not be considered a formal response, although they would be sent to the Panel. Respondent did provide supplemental materials within the time frame set by the Panel, but, as noted above, those submissions were not limited to the specific issues raised in the Panelís August 10, 2001 Order and thus have been disregarded.
The crux of Respondentís various submissions is that Complainantís business plans have not been consistent with regard to the use of the Archipelago and ARCA marks and that Respondent intends to make a fair use of the word "Archipelago."
6. Procedural Issues
The Panel notes that there are technically two distinct respondents in this case: "Creative Genius Domain Sales" and "Creative Genius Domain Name Sales d/b/a Robert Aragon." Half of the ARCA Domain Names at issue in this case are registered to the former and the other half to the latter. Although the names of these two registrants are slightly different, they both are clearly entities controlled by Robert Aragon, who has submitted materials regarding all of the ARCA Domain Names. To the extent they are considered to be separate respondents, the Panel notes that, pursuant to Rule 10(e), it is within the general powers of this Panel to consolidate multiple domain name disputes. Therefore, the Panel will treat both registrants as a single respondent for the purposes of this proceeding.
With respect to Respondentís various emails, Rule 5 explicitly outlines the requirements for filing an appropriate Response with the Center. Respondent was reminded of these rules, including the deadline by which his Response was due, upon transmission of the Complaint. Respondent failed to comply with any of the requirements outlined in Rule 5(b), including the obligation to respond specifically to the allegations contained in the Complaint. Further, Rule 5(e) states, "If a Respondent does not submit a response, in the absence of exceptional circumstances, the Panel shall decide the dispute based on the complaint." The Panel finds that Respondent did default by failing to file a Response.
The Policy does not mandate a finding for Complainant in cases of default, but if there is a default, the panel can accept the facts alleged in the Complaint as true. See Talk City, Inc. v. Michael Robertson, WIPO Case No. D2000-0009 (Feb. 29, 2000). Complainant, however, still bears the burden of proof. If it fails to meet its burden by proving the elements outlined in ∂ 4(a) of the Policy, the Panel must rule for Respondent. See, e.g., Eauto, L.L.C. v. Eauto Parts, WIPO Case No. D2000-0096 (Apr. 9, 2000) (finding for Respondent, even in the absence of a formal Response, given that Complainant failed to prove Respondent had no rights or legitimate interests in the domain name <eautoparts.com>).
Given that Respondent is proceeding pro se, the Panel chose to review Respondentís June 11 and August 26 and 27, 2001, emails. After considering the emails, the Panel has concluded that it will not accord any weight to the facts alleged therein because Respondentís emails did not contain any certification that the information contained in the emails was, "to the best of Respondentís knowledge complete and accurate." Rule 5(b)(viii). Without the benefit of this certification, it is not appropriate to accept the factual assertions contained in the emails. Talk City v. Robertson, WIPO Case No. D2000-0009 (Feb. 29, 2000). Moreover, even if the June 11 and August 26 and 27, 2001, emails were properly certified and even if they were treated as a Response, it would not affect this decision. That is because Respondentís emails made no attempt to respond directly to the allegations of the Complaint or the substance of the Policy. As discussed below, Respondent has not articulated a convincing legitimate reason for his registration of the ARCA Domain Names or adequately countered the well-pled charge that he registered and used the domain names in bad faith.
7. Discussion and Findings
Paragraph 4(a) of the Policy directs that Complainant must prove, with respect to the domain names at issue, each of the following:
(i) The domain names at issue are identical or confusingly similar to Complainantís mark; and
(ii) Respondent has no rights or legitimate interests in the domain names; and
(iii) The domain names have been registered and are being used in bad faith.
The Fourteen Domain Names At Issue Are Confusingly Similar to Complainantís Mark.
Complainant has been using the marks ARCHIPELAGO and ARCA to distinguish its business since it began operating as an ECN in 1997. Although Complainant does not currently own a federal trademark registration for either of these marks, it has three pending applications to register the marks ARCHIPELAGO, ARCA and TRADEARCA.COM .
Furthermore, Complainant has alleged, and Respondent has not contested, that Complainant used both the ARCA and ARCHIPELAGO marks in United States commerce for over four years to promote its services and has produced evidence such as advertisements and articles in financial publications that the companyís services are well known in the financial industry by both marks. The timing of Respondentís domain name registrations is itself powerful evidence of the validity of Complainantís marks. Accordingly, the Panel finds that the ARCA and ARCHIPELAGO marks have become sufficiently tied to Complainantís business practices in the financial industry to give rise to trademark rights.
If a domain name wholly incorporates a trademark, it is confusingly similar to the mark for purposes of the Policy. Eauto, LLC v. Eauto Parts, WIPO Case No. D2000-0096 (Apr. 9, 2000); Wal-Mart Stores, Inc. v. Richard Macleod d/b/a For Sale, WIPO Case No. D2000-0662 (Sept. 19, 2000). As stated in the Complaint, ten of the fourteen ARCA Domain Names contain Complainantís ARCA mark, and the remaining four include the ARCHIPELAGO mark. In addition, eleven of the ARCA Domain Names registered by Respondent reference stocks, trading, exchanges, or ECNs.
The Panel finds Complainant has met its burden under ∂ 4(a)(i) of the Policy: the ARCA Domain Names are confusingly similar to Complainantís marks.
Respondent Has No Rights Or Legitimate Interests In The Domain Names At Issue.
Complainant alleges Respondent has no legitimate interest in the domain names at issue because: (i) it has not granted Respondent any rights to use the ARCHIPELAGO or ARCA marks, and (ii) Respondent is not in any way related to, associated or in business with Archipelago.
There are three ways in which Respondent could demonstrate a legitimate interest in the domain name. These are outlined in ∂ 4(c) of the Policy:
(i) Before any notice to Respondent of the dispute, Respondentís use of, or demonstrative preparation to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services.
(ii) [Respondent] has been commonly known by the domain name, even if [Respondent] has acquired no trademark or service mark rights.
(iii) Respondent is making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleading divert consumers or to tarnish the trademark or service mark at issue.
In his June 11 2001, emails, Respondent claims he has "a desire to develope [sic] and have had for quite some time my site into a retail, travel, exchange (cultural), homes [sic] to serve the public. . . . Please as I am sure that you are aware the term is generic and Archipelago is a network (exchange) of island that span our globe in many regions." Even if the Panel were to consider Respondentís June 11, 2001 or his August 26 and 27, 2001 transmissions, Respondentís contentions do not satisfy his burden pursuant to ∂ 4(c)(i).
Respondent has not shown "demonstrative preparation[s]" to make a bona fide use of the domain names. Although proof of a business plan utilizing the domain name and signs of pursuit of the business plan can be evidence of demonstrable preparation, see Physik Instrumente GmbH & Co. v. Stefan Kerner, WIPO Case No. D2000-1001 (October 3, 2000), mere assertions of an inchoate plan are insufficient, especially if significant time has passed since the registration of the domain name with no effort to act on those plans. See World Wrestling Federation Entertainment, Inc. v. Ringside Collectibles, WIPO Case No. D2000-1306 (Jan. 24, 2000) (WWF collectibles dealerís claims of plans to create an auction site not enough to overcome a prima facie case of no legitimate use); Fielding v. Corbet, WIPO Case No. D2000-1000 (Sept. 25, 2000) (Respondentís claim that he wanted to start a fan club given no weight since he owned the domain name <brigetjones.com> for two years without building a website). Respondent registered many of the domain names at issue, including domain names (1) through (4), almost two years ago. At the time of this opinion, none of the websites located at the ARCA Domain Names contain any substantive content. They do not offer goods and services nor do they provide the sort of information alluded to by Respondent in his emails. In addition, Respondent does not provide any evidence that the ARCA Domain Names containing "stock", "stocktrading", "stocktrade", "stocktrading", "stocktrader", or "ecn" have anything to do with Respondentís purported interest in a retail "exchange" in the Archipelago Islands.
Moreover, as noted above, the timing of Respondentís domain name registrations is suspicious. It strongly suggests an effort to trade on Complainantís goodwill rather than a bona fide effort to provide services somehow related to the Archipelago Islands.
Finally, Respondent provides no evidence that he or his company have ever been known by either the ARCA or ARCHIPELAGO names.
Therefore, the Panel finds Complainant has met its burden pursuant to UDRP Policy ∂ 4(a)(ii): Respondent has no rights or legitimate interests in the domain names at issue.
The Domain Names Have Been Registered By Respondent And Are Being Used In Bad Faith
The Policy specifically outlines circumstances that shall be evidence of the registration and use of a domain name in bad faith. Two sections of the Policy are particularly applicable to the case at hand. Paragraph 4(b)(i) provides that bad faith can be shown by "circumstances indicating registration of acquisition of the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the Complainant who is the owner of the trademark or service mark or to a competitor of that Complainant, for valuable consideration in excess of documented out-of-pocket costs directly related to the domain name." Likewise, paragraph 4(b)(ii) provides that it shall be bad faith if "[Respondent] registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that [Respondent] engaged in a pattern of such conduct."
Respondent registered the first of the domain names at issue less than two weeks after Complainant filed its application with the SEC to become a self-regulating stock exchange. Only a few months later, Respondent placed some of these domain names up for auction with an asking price exponentially higher than its costs for registering the domain names. Additionally, Respondent attempted to exchange domain name (1) with Complainant for stock in Complainantís company worth much more than the purchase price of the domain name itself. Although there is no evidence that Respondent has placed domain names (4) through (7) up for sale, his offer of sale of the other, closely-related domain names supports a reasonable inference that Respondent also registered these four domain names "for the purpose of selling, renting, or otherwise transferring the domain name registration[s] to the Complainant . . . . for valuable consideration in excess of the documented out-of-pocket costs." Therefore, Respondent has displayed behavior prohibited by ∂ 4(b)(i) and (b)(ii) of the Policy. See, e.g., General Motors Corp. v. Vette Owners, WIPO Case No. D2000-0595 (Oct. 20, 2000) (bad faith found when Respondent advertised domain name for sale on web site <corvette.com>).
Respondent demonstrated further evidence of bad faith by his attempts to register as domain names so many permutations of the ARCHIPELAGO and ARCA marks. See, e.g., ISL Marketing AG v. Chung, WIPO Case No. D2000-0034 (Apr. 3, 2000) (Respondent found to have registered in bad faith 13 of 15 permutations of the World Cup trademark); Magnum Piering, Inc. v. Mudjackers, WIPO Case No. D2000-1525 (Jan. 29, 2001) (Respondentís attempt to occupy the field of rational domain names for Complainantís business constituted bad faith). Complainant has provided evidence that Respondent is engaged in a pattern of such conduct; he has registered over a thousand other domain names, many containing protected trademarks. Although hundreds of the domain names registered by Respondent relate to online stock trading, according to Complainant, none of the websites owned by Respondent are currently conducting business operations of any kind.
Therefore, the Panel finds Complainant has met its burden pursuant to ∂ 4(a)(iii) of the Policy: the domain names at issue have been registered by Respondent and are being used in bad faith.
For all the forgoing reasons, the Panel decides that Complainant has met its burden of proof under ∂ 4(a) of the Policy: the ARCA Domain Names are confusingly similar to trademarks in which the Complainant has rights, Respondent lacks a legitimate interest in those domain names, and Respondent has registered and used the ARCA Domain Names in bad faith. Accordingly, this Panel concludes that the ARCA Domain Names should be transferred to the Complainant.
David H. Bernstein
Dated: September 7, 2001
1. Complainant claims that Respondent made the domain names <arcatrading.com> and <arcatrader.com> available for purchase on afternic.comís website as well. Because the Panel has declined to grant Complainant leave to amend its Complaint to include these two domain names in this proceeding, the Panel makes no findings regarding <arcatrading.com> and <acratrader.com>.
2. Because the PTO website indicated that the PTO issued a refusal to register ARCHIPELAGO, the Panel asked Complainant to submit a copy of the file wrapper so that the Panel could determine the nature of the refusal to register. Having now received the file wrapper, the Panel is satisfied that the office actions issued by the PTO are based on procedural, rather than substantive issues (e.g., specimens unacceptable, inappropriate recitation of services, failure to provide properly worded declaration) and therefore, the PTOís final refusal does not undermine Complainantís assertion that it owns rights in the trademark ARCHIPELAGO. Moreover, Complainant has attempted to overcome these procedural deficiencies in its most recent filing with the PTO.